May 1, 2015—With hard pressed economic times, state and local governments have turned to new sources of revenue: intellectual property licensing. The City of New York has been in the game for decades, licensing use of its I ♥ NY symbol. San Francisco enforces its rights in the image of its BART transit pass. And Portland is the proud owner of an old sign with a reindeer.
Nobody likes being left out, especially Texas. So it shouldn’t have surprised anyone when the Texas General Land Office (“GLO”) asserted a claim of trademark infringement against the Alamo Brewing Brewing Co. and the Texian Brewing Co. (logos shown below).
The GLO claims that the the outline of the facade of the building is a “treasured symbol of Texas liberty” and its use, along with the word ALAMO, suggests an affiliation with the State and the historic Alamo location. In filings with the court, the GLO claims that the roof outline is famous and that “consumers anticipate that products bearing [these marks] are used by or with permission of the state.”
The GLO also owns a number of U.S. registrations for the marks THE ALAMO and THE ALAMO and Design, shown below:
What do you think? Famous? Distinctive? Or common Spanish colonial roof that reminds you more of Taco Bell than the State of Texas?
On a brief review, it is difficult for me to find the fame of the Alamo roofline mark. Maybe it is in the basement.
The GLO and the brewery reached a settlement recently, in which the parties agreed to a Consent Order and Final Judgment for the legal proceeding. This judgment and order issued yesterday, but the actual terms of the Settlement Agreement are confidential.
The GLO’s Commissioner has reportedly stated that companies are free to use the wording ALAMO, but cannot use the images or insignia of the Alamo, such as the roofline (good news for Alamo Rent a Car). In respect of the confidentiality terms, the Alamo Beer Company’s CEO Eugine Simor was quoted as stating that the “Alamo Beer Company is allowed to use the shape of The Alamo. I really can not say much more.”
In an apparent effort to convince other business to remove lines which look like roofs from their logos, the Press Secretary for the GLO released the following statement:
Alamo Brewing Company is the first commercial recipient of an official license to use the Alamo mark, for which they paid a substantial licensing fee. Any and all fees collected for use of the mark will be put in a dedicated fund for the Alamo. This matter was resolved amicably and the GLO is pleased to have come to mutually acceptable terms of agreement in this matter. (emphasis added)
It is interesting that after so many years, Alamo Brewing is the first commercial recipient of a license. While they may be the first to receive a license, it seems unlikely they were the only party to use the ALAMO mark or an image of the roofline. It’s possible that there may be enough third-party uses to show that the GLO’s marks are weak or entitled to narrow protection. But, then again, I have always heard that everything is bigger in Texas. Apparently that applies to the scope of protection for trademark rights, too.
